(57) Partial Payment of Patent Fees
During Period of October 1, 1998 through
no later than October 9, 1998 pursuant to
Continuing Resolution
Congress recently passed a continuing resolution which has been signed
by the President that maintains patent fees at the amounts charged by the
PTO on September 30, 1998 for the period from October 1, 1998 through no
later than October 9, 1998. See Pub. L. No. 105-240, 117 (1998).
This continuing resolution supersedes the final rule entitled Revision
of Patent Fees for Fiscal Year 1999, which was published in the Federal
Register at 63 Fed Reg. 39731 (July 24, 1998), and reprinted in the
Official Gazette at 1213 Off. Gaz. Pat. Office 153 (August 18, 1998).
Section 117 of the continuing resolution authorizes the Commissioner,
during the period of the continuing resolution, to recognize a partial
payment of a fee and to require unpaid amounts to be paid within a time
period set by the Commissioner.
Under the above-mentioned authority provided by Section 117 of the
continuing resolution, if any patent fee is timely paid during the
period covered by the resolution (October 1 through no later than
October 9, 1998) in an amount which is at least equal to the fee
published in the above-mentioned final rule but less than the fee set
forth in the patent fee schedule in effect on September 30, 1998, the
PTO will mail applicant a notice setting a time period in which the
balance of the fee may be paid without any penalty, such as, payment of
a surcharge required by 37 C.F.R. 1.16(e), the abandonment of an
application or the expiration of a patent.
Examples of how the PTO will exercise the above-mentioned authority
provided by Section 117 of the continuing resolution during the period
from October 1 through no later than October 9, 1998 with respect to the
payment of: (1) a basic filing fee for an application under 35 U.S.C.
111(a), (2) a basic national fee in an international application, and
(3) a maintenance fee, are set forth in the following paragraphs.
(1) If a nonprovisional application under 35 U.S.C. 111(a) is filed
with the oath or declaration required by 37 C.F.R. 1.51(b) and a
basic filing fee which is at least equal to the basic filing fee
published in the above-mentioned final rule but is less than the basic
filing fee in effect on September 30, 1998, the PTO will mail applicant
a notice setting a time period in which the balance of the basic filing
fee must be paid. If the balance is paid within the time period set by
the notice, the surcharge set forth in 37 C.F.R. 1.16(e) will not be
required.
(2) If the United States is an elected office in an international
application, the applicant must pay the full basic national fee within
30 months from the priority date in order to avoid abandonment of the
application. See 37 C.F.R. 1.495(b). The amount of the basic national
fee due is the fee in effect under 35 U.S.C. 41(a)(9) - (12) at the
time the basic national fee is paid. If applicant timely pays a basic
national fee which at least equals the basic national fee published in
the above-mentioned final rule but is less than the basic national fee
in effect on September 30, 1998, the PTO will mail applicant a notice
setting a time period in which the balance of the basic national fee
must be paid to avoid abandonment of the international application. If
the balance is paid within the time period set by the notice (even if
that time period extends beyond 30 months from the priority date), the
full basic national fee will be treated as being timely paid. If the
balance is not paid within the time period set by the notice or the
remainder of the period of 30 months from the priority date, if any, the
full basic national fee will be treated as not having been paid and the
intemational application will be abandoned.
(3) If a maintenance fee is submitted (with the surcharge under 37
C.F.R. 1.20(h) within the six-month grace period in 35 U.S.C.
41(b)) which at least equals the applicable maintenance fee published in
the above-mentioned final rule but is less than the applicable
maintenance fee in effect on September 30, 1998, the PTO will mail
applicant a notice setting a time period in which the balance of the
applicable maintenance fee must be paid. If the balance is paid within
the time period set by the notice (even if that time period extends
beyond the six-month grace period in 35 U.S.C. 41(b)), the
maintenance fee will be treated as timely paid. If the balance is not
paid within the time period set by the notice or the remainder of the
six-month grace period in 35 U.S.C. 41(b), if any, the maintenance
fee will be treated as not having been paid and the patent will expire
at the end of the six-month grace period in 35 U.S.C. 41(b).
Questions or comments concerning this notice should be forwarded to John
F. Gonzales, Senior Legal Advisor, by facsimile at (703) 308-6916, by
telephone at (703) 305-9285, or by e-mail at john.gonzales@uspto.gov.
October 1, 1998 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1215 OG 117]